Samsung Electronics America Inc v. Proxense LLC

1. Case Identification

• Case #: IPR2021-01444
• Patent #: 8,352,730
• Filed: August 26, 2021
• Petitioner(s): Samsung Electronics America, Inc.
• Patent Owner(s): Proxense, LLC
• Challenged Claims: 1-11

2. Patent Overview

• Title: Biometric Authentication System
• Brief Description: The ’730 patent discloses a method and device for user authentication that combines biometric verification with device verification. A user’s biometric scan is validated against data stored on an integrated wireless device, which then transmits a device ID code to a third-party agent for authentication before granting access to a resource.

3. Grounds for Unpatentability

Ground 1: Obviousness over Scott, Russell, and Lapsley - Claims 1-2, 4-9, and 11 are obvious over Scott in view of Russell and Lapsley.

• Prior Art Relied Upon: Scott (WO 1999/056429), Russell (Application # 2004/0044627), and Lapsley (Application # 2001/0000535).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Scott, the primary reference, taught the core of the invention. Scott disclosed a portable Personal Identification Device (PID) that persistently stored a user’s biometric data (e.g., fingerprint template) and a unique device ID. The PID would verify a user’s live biometric scan against the stored template and, upon a match, wirelessly transmit the device ID to a host facility. This host facility would then authenticate the PID by comparing its ID to a stored list of legitimate device IDs before granting access. Petitioner contended that to the extent Scott did not explicitly teach using a private key for decryption (a "secret decryption value"), Russell taught using well-known public/private key encryption schemes where a private key is used for decryption. Furthermore, to the extent Scott’s “host facility” was not explicitly a "third-party trusted authority," Lapsley taught using a trusted third-party data processing center to authenticate devices by checking their hardware ID against a central list.
  • Motivation to Combine: A POSITA would combine Scott with Russell to improve the security of wireless transmissions, a known vulnerability, by implementing a standard public/private key encryption method where the device uses its private key to decrypt messages. A POSITA would combine the resulting system with Lapsley’s teachings to improve efficiency, security, and flexibility by consolidating the authentication function into a central, trusted third-party agent, a common commercial practice for systems like ATMs.
  • Expectation of Success: Success was expected because the combination involved applying conventional, well-understood security and network architecture principles (public-key cryptography and third-party authentication) to the known biometric authentication system of Scott.

Ground 2: Obviousness over Berardi, Rosen, Shreve, and Kinoshita - Claims 1-2, 4-6, 8-9, and 11 are obvious over Berardi in view of Rosen, Shreve, and Kinoshita.

• Prior Art Relied Upon: Berardi (Patent 7,239,226), Rosen (Patent 6,175,921), Shreve (Application # 2002/0109580), and Kinoshita (Application # 2003/0055792).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Berardi, as the base reference, disclosed a portable fob for point-of-sale transactions that stored and compared biometric data and wirelessly transmitted identifying information (including a unique fob ID) for authorization. To meet the "tamper proof" and "unable to be subsequently altered" limitation, Petitioner relied on Rosen, which explicitly taught a tamper-proof electronic agent for storing sensitive data like biometrics, device IDs, and private keys. To meet the "third-party trusted authority" limitation, Petitioner pointed to Shreve, which disclosed authenticating a fob device via a service provider with a secured database cross-referencing fob IDs with user information. Finally, to meet the limitation of receiving an "access message" from the agent, Petitioner cited Kinoshita, which taught a third-party payment gateway sending an email message with commands to a user's portable device to execute a payment application after successful authentication.
  • Motivation to Combine: A POSITA would combine Berardi with Rosen to improve the security of the sensitive data stored on the fob by using known tamper-proofing techniques. A POSITA would add Shreve’s third-party authentication model to improve system efficiency and security by centralizing authentication. Finally, a POSITA would incorporate Kinoshita’s method of sending an access message to provide a known mechanism for the authenticated device to receive instructions and complete a transaction.
  • Expectation of Success: Each additional reference was argued to provide a solution to a known problem using predictable and well-established technologies. Combining tamper-proof storage, third-party authentication, and command-based access messages were all common design choices for improving the security and functionality of a transaction system like Berardi’s.

• Additional Grounds: Petitioner asserted additional obviousness challenges for claims 3, 6, and 10 based on the Scott/Russell/Lapsley combination in view of Robinson (for age verification) and Rhoads (for establishing a secure channel).

4. Key Claim Construction Positions

• Petitioner argued that no express claim constructions were required and that terms should be given their plain and ordinary meaning.
• However, based on the prosecution history and Patent Owner's infringement contentions, Petitioner noted that the term “tamper proof format” was understood to apply to all stored data, including the biometric data, the device ID codes, and the secret decryption value, and meant the data was stored in a way that it is "unable to be subsequently altered."

5. Arguments Regarding Discretionary Denial

• §325(d) - Same or Substantially Same Art: Petitioner argued against discretionary denial under §325(d), asserting that none of the prior art references relied upon in the petition were considered by the USPTO during the original prosecution of the ’730 patent. Therefore, the arguments were new and not cumulative.
• §314(a) - Fintiv Factors: Petitioner argued that the Fintiv factors weighed strongly in favor of institution. Key arguments included that the parallel district court litigation was in its infancy with no trial date set, no stay requested, and minimal investment by the parties. The projected date for a Final Written Decision would likely precede any potential trial date. Critically, Petitioner stipulated that if IPR is instituted, it would not pursue in the litigation the specific invalidity grounds raised in the petition, eliminating concerns of duplicative efforts. Finally, Petitioner argued the petition presented strong merits for unpatentability.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-11 of Patent 8,352,730 as unpatentable.